Practice on Remittal to First Instance: Article 11 is revised to emphasise that a Board should not remit without special reasons. If the Opposition Divisions will make more use of obiter remarks to express opinions on novelty and inventive step, then possibly this will enable the Boards to decide all issues at once, without remittal to the first-instance. However, there is at present no clear indication that the practice of the Opposition Divisions will change.

Basis of the Appeal Proceedings: Article 12 is revised to emphasise that the decision under appeal and the minutes of any oral proceedings (hearing) at first-instance are automatically part of the basis of the appeal, as well as the materials filed by the parties.

Primary Object of Appeal Proceedings: New Article 12(2) emphasises that the primary object of appeal proceedings is to review the decision under appeal in a judicial manner, and requires the parties to direct their case in this way. If it will be enforced strictly, this has the potential to restrict a patentee’s ability to file new claim requests for the appeal.

Admissibility of the Appeal Case as Filed: Article 12(4) is revised to emphasise that any part of a party’s appeal case that is not directed to matters on which the first-instance decision was based will be admissible only at the discretion of the Board (taking into account the complexity and effects of the change of direction as well as procedural economy), and must be clearly identified and explained. The Explanatory Notes describe this as the first level of a new “convergent approach”, whereby any change in a party’s case at the start of the appeal – for example, new claim requests by a patentee – must be examined for admissibility by the Board. This is in contrast to present Article 12(4), which merely states that Boards have the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.

Admissibility of Amendments during the Appeal Process: Article 13(1) is revised to emphasise that amendments to a party’s case during the appeal process will also be examined for admissibility by the Board, taking into account the current state of the proceedings and the suitability of the amendment to resolve admissible issues in the appeal. The Explanatory Notes describe this as the second level of the “convergent approach”, perhaps indicating a stricter examination for admissibility by the Board than at the start of the process.

Admissibility of Amendments after a Communication or Summons: New Article 13(2) provides that, after a Communication of the Board or issuance of a Summons to the hearing, any amendment to a party’s case will in principle not be taken into account unless there are exceptional circumstances justified by cogent reasons. The Explanatory Notes describe this as the third level of the “convergent approach”, perhaps indicating the strictest examination for admissibility by the Board.

Communication Listing Important Matters for the Hearing: Article 15 is revised to require all Boards to issue a communication before a hearing, drawing attention to matters that seem of to be of particular significance. However, it will not be mandatory for a Board to provide a preliminary opinion on how it views such matters.

Transitional provisions: Article 25 provides that the new Rules will apply to all appeal cases pending on 1 January 2020, with the exception that Article 12(4) to (6) (the first level of the “convergent approach”) will not apply to cases on which the statement of grounds of appeal was filed before 1 January 2020, and Article 13(2) (the third level of the “convergent approach”) will not apply to cases on which a hearing has been summoned or a communication from the Board has been issued before 1 January 2020. Note, however, that new Article 13(1) (the second level of the “convergent approach”) will apply to all appeal cases pending on 1 January 2020.

The “convergent approach” has the potential to require patentees to formulate their best sets of claims as the Main and Auxiliary Requests during the first-instance procedure, possibly allowing only necessary adjustments (a) in reaction to the first-instance decision (first level), (b) following developments during the early part of the appeal procedure (second level), and (c) in final preparation for, and at, the appeal hearing (third level).

Much will depend on the extent to which the parties can justify amendments as being genuinely unforeseeable earlier in the procedure, and how much latitude the Boards will give when considering whether amendments should be admitted.

The general applicability of the second level of the “convergent approach” from 1 January 2020 urges all parties to EPO appeal proceedings to check that all necessary documents, particularly a patentee’s best claim requests and an opponent’s best attacks, have been provided, and to remedy any deficiencies before 31 December 2019.

The introduction of the new Rules of Procedure also urges all parties to EPO opposition proceedings to ensure that a patentee’s best claim requests and an opponent’s best attacks are admitted and considered in the first-instance Opposition Division decision.

Please get in touch with your usual contact at Haseltine Lake Kempner for further information and advice.